Yahoo Inc. v. 杨阳
Claim Number: FA2211002022306
Complainant is Yahoo Inc. (“Complainant”), represented by Joseph Daniels-Salamanca of Kilpatrick Townsend & Stockton LLP, California. Respondent is 杨阳 (“Respondent”), CN.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ymaillogin.com>, registered with Domain International Services Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on November 30, 2022; Forum received payment on November 30, 2022.
On December 1, 2022, Domain International Services Limited confirmed by e-mail to Forum that the <ymaillogin.com> domain name is registered with Domain International Services Limited and that Respondent is the current registrant of the name. Domain International Services Limited has verified that Respondent is bound by the Domain International Services Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 5, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ymaillogin.com. Also on December 5, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement relating to the disputed domain name is written in the Chinese language. Therefore, the presumption is that the language of the proceeding will be Chinese. However, it is open to the Panel to decide to conduct the case in a more appropriate language. Complainant submits that that language should be English and that the matter should proceed in English in the light of the English language Complaint. See Rule 1 (a).
Complainant has submitted that because Respondent is conversant and proficient in English, the proceeding should be conducted in English. As noted, the Panel has a discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent’s website available at the disputed domain name uses English characters and words therein, suggesting that Respondent is proficient in the English language. Further, Complainant is not conversant nor proficient in the Chinese language and it would require delay and unnecessary costs to translate the documents into Chinese.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to show that the Respondent is probably conversant and proficient in the English language. After considering all of the circumstances of the present case, the Panel decides that the proceeding should be in English and the matter may go forward on that basis.
A. Complainant
Complainant made the following contentions:
Complainant, Yahoo Inc., provides services including web directory and search services, technical support, e-mail, business management, and more. Complainant has rights in the Y!MAIL mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,590,994, registered on December 14, 2021). See Compl. Annex 7. Respondent’s <ymaillogin.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the mark while adding the descriptive term “login”, omitting the exclamation point, and adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <ymaillogin.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its Y!MAIL mark in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead hosts adult-oriented material and third party gambling advertisements.
Respondent registered and uses the <ymaillogin.com> domain name in bad faith. Respondent engages in a pattern of bad faith while offering competing technical support services. Additionally, Respondent hosts adult-oriented material and gambling advertisements. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company that provides services including web directory and search services, technical support, e-mail, business management.
2. Complainant has established its rights in the Y!MAIL trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,590,994, registered on December 14, 2021).
3. Respondent registered the <ymaillogin.com> domain name on February 28, 2022.
4. Respondent has caused the disputed domain name to be used to host adult-oriented material and third party gambling advertisements.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the Y!MAIL mark through its registration of the mark with the USPTO (e.g. Reg. No. 6,590,994, registered on December 14, 2021). See Compl. Annex 7. Under Policy ¶ 4(a)(i), registration with the USPTO is generally sufficient to establish rights in a mark. See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant registered the mark with the USPTO, the Panel finds Complainant has established its rights in the mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s Y!MAIL mark. Complainant argues Respondent’s <ymaillogin.com> domain name is identical or confusingly similar to Complainant’s Y!MAIL mark. Under Policy ¶ 4(a)(i), adding a descriptive word along with the “.com” gTLD is insufficient in differentiating from the mark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”). Additionally, omitting a punctuation mark does not differentiate the domain name from the mark. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). The disputed domain name incorporates the mark while adding the descriptive term “login”, omitting the exclamation point, and adding the “.com” gTLD. As the Panel agrees, it finds Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s Y!MAIL mark and to use it in its domain name adding the descriptive term “login” to the mark and omitting the exclamation point;
(b) Respondent registered the domain name on February 28, 2022;
(c) Respondent has caused the disputed domain name to be used to host adult-oriented material and third-party gambling advertisements;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends Respondent is not commonly known by the <ymaillogin.com> domain name, nor has Complainant authorized or licensed Respondent to use its Y!MAIL mark in the disputed domain name. Under Policy ¶ 4(c)(ii), WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) (“Here, the WHOIS information lists “er nong wu” as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here, the WHOIS information identifies Respondent as “杨阳.” See Registrar Verification Email. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues Respondent is not using the <ymaillogin.com> domain name for any bona fide offering of goods or services, nor any noncommercial or fair use. Under Policy ¶¶ 4(c)(i) and (iii), using a disputed domain name to host adult-oriented material and gambling advertisements is not a bona fide offering of goods or services, nor any legitimate noncommercial or fair use. See Tumblr, Inc. v. Srivathsan GK, FA1409001582401 (Forum Oct. 30, 2014) (“Consequently, the Panel finds that Respondent’s use of the disputed domain name for adult-oriented images also does not provide a bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the disputed domain name’s resolving website, which displays adult-oriented material and third-party gambling advertisements located at <561.com>. See Compl. Annex 15. Thus, as the Panel agrees, it finds Respondent is not using the disputed domain name for any bona fide offering of goods or services, nor any noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues Respondent registered and uses the <ymaillogin.com> domain name in bad faith by offering competing services in disruption of Complainant’s business. Under Policy ¶ 4(b)(iii), offering competing services is a disruption of a complainant’s business. See Spark Networks PLC v. Houlihan, FA 653476 (Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). Complainant provides screenshots of Respondent’s resolving website, which offers competing technical support services for Ymail and Yahoo mail. See Compl. Annex 15. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Secondly, Complainant submits Respondent registered and uses the <ymaillogin.com> domain name in bad faith by using it to host adult-oriented material. Under Policy ¶ 4(a)(iii), using a disputed domain name to display adult-oriented material is evidence of bad faith. See Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”). The Panel recalls Complainant’s screenshots of the resolving website, which display adult-oriented material and gambling advertisements located at <561.com>. See Compl. Annex 15. As the Panel agrees, it finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Thirdly, Complainant submits Respondent registered the <ymaillogin.com> domain name in bad faith because it had actual knowledge of Complainant’s rights in the Y!MAIL mark. Under Policy ¶ 4(a)(iii), actual knowledge is generally sufficient in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (finding Respondent had actual knowledge of Complainant’s rights in the USPS mark “given the widespread use of Complainant’s mark and the fact that Respondent registered four separate domain names all of which include Complainant’s USPS mark in its entirety”). The Panel recalls that Complainant’s registered Y!MAIL mark is incorporated into the domain name. As the Panel agrees, it finds Respondent had actual knowledge of Complainant’s rights in the mark under Policy ¶ 4(a)(iii) and hence registered the domain name in bad faith.
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the Y!MAIL mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ymaillogin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 4, 2023
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